General Motors (GM) lost a UDRP bid seeking transfer for the domain name www.mycadillac.com when an arbitrator found that there was no evidence of bad faith because the Respondent had not used the domain to compete with GM or harm its business. The decision is interesting because GM lost a case concerning one of the world’s most famous brands even though there was evidence that the Respondent had tried to sell the domain for a huge profit.
The Respondent, Mr. Chad Clegg, resides in Arizona and has owned the domain name for approximately twelve (12) years. Mr. Clegg has used the domain name since that time to post mostly pay-per click links for sites related to the State of Michigan. At one point Mr. Clegg apparently offered to sell the domain publicly for the exact amount of U.S. $56,665.00.
GM argued that the fame/ubiquity of the CADILLAC mark, coupled with the offer for sale and pay-per click listings Mr. Clegg has on the website, demonstrated that Mr. Clegg had acted in bad faith by attempting to capitalize on the site’s association with the CADILLAC marks, and that he had failed to use the domain for a legitimate commercial purpose. Bad faith is a key element needed when deciding a UDRP complaint.
The panelist, Mr. Douglas M. Isenberg, found that Mr. Clegg had not acted in bad faith under UDRP law while at the same time noting that he had “extreme suspicions” that Mr. Clegg was not so naive that he had registered the domain without knowledge of the GM trademarks.
To this point, Mr. Isenberg cited a number of cases where the Respondent had registered a domain name and tried to disguise its intentions to capitalize on its association with a registered trademark, but distinguished them on the basis that in those cases the “pretext” was clear and supported by evidence. Here, there was no similar evidence according to the arbitrator.
What seems to have carried the day for Mr. Clegg was the fact that:
1.) He did not have anything related to GM or the CADILLAC marks on the site
2.) There was no affirmative evidence of Mr. Clegg’s bad faith intentions
3.) The name “Cadillac” has a history, in that it refers to the city in Michigan that was named in honor of the French explorer “Antoine de la Mothe Cadillac” who founded Detroit in the early 1700’s.
For GM, the outcome may have been different if it had simply brought the action earlier. Additionally, GM could have emphasized that Mr. Clegg’s reliance on the history of the “Cadillac” name makes little sense in terms of justifying use of the domain name. Adding the term “my” does not provide any context for the reference/history that Mr. Clegg relied on for support.
In fact, there is probably a strong argument that the word “my” (as used in this case) emphasizes the adjacent term “cadillac” as an object or thing that is owned or possessed by someone, not a place. Although the term “cadillac” certainly has alternative potential uses as a domain name, there is no question that the primary public connection to the term is to the CADILLAC brand automobile. Therefore, using the term “my” as part of the domain name creates the impression that the term “Cadillac” is being used as a reference to the famous trade and service marks, not the French explorer or his namesake city in Michigan.